Introduction

Germany and China have fostered deep and enduring economic ties, with innovation and trade at the heart of their partnership. As a cornerstone of this robust relationship, Germany's patent system plays a pivotal role in supporting innovation-driven businesses. Yet, a curious trend persists: while companies from many leading economies, such as the United States and Japan, have long recognized the strategic advantages of filing directly with the German Patent and Trademark Office (DPMA), Chinese applicants continue to rely predominantly on the European Patent Office (EPO).

Could Chinese applicants be missing out on the strategic advantages of Germany's patent system?

As Europe's largest economy and a central hub for trade and business, Germany offers unparalleled benefits for patent protection. Filing directly with the DPMA – not the EPO – can provide Chinese companies with substantial cost savings, procedural flexibility, and a competitive edge in Europe’s most critical market for patent enforcement.

This article explores why the DPMA should play a role in the European patent strategies of Chinese applicants and how it can serve as a gateway to success in the European market.

The Patent Examination Processes at the DPMA and EPO

The DPMA and the EPO are two key institutions for intellectual property protection in Europe.

The DPMA, headquartered in Munich, is Germany's national authority for patent, trademark, and design registrations. It processes applications for German national patents, offering protection exclusively within Germany’s borders. As Europe’s largest economy and its central hub for innovation, Germany accounts for approximately 19% of the continent’s population and 21.6% of its GDP. This makes the DPMA particularly relevant for businesses targeting the German market.

In contrast, the EPO, also headquartered in Munich, administers the European patent system. This allows applicants to seek protection across multiple European – and some non-European – countries through a single filing. However, an EPO-granted patent does not automatically take effect in all designated countries; applicants must validate it in individual jurisdictions or request unitary effect.

Both offices follow well-structured processes for patent examination. The DPMA and the EPO accept applications filed either directly or through the PCT route, and in both cases, the initial application can be submitted in any language. However, a translation is required – into German for the DPMA or into one of the EPO’s official languages (English, German, or French).

At the DPMA, a request for examination must be filed within seven years from the application date. A single examiner examines the application to assess its compliance with the requirements of patentability, including novelty, inventive step, and industrial applicability. If necessary, oral proceedings may be held to address unresolved issues. The process concludes with either the grant of a German national patent or in the refusal of the application.

At the EPO, examinations are conducted by a division of three examiners, applying stringent criteria, including clarity, novelty, inventive step, and industrial applicability. Oral proceedings, if necessary, are part of the process. Successful applications result in a European patent that requires validation in individual jurisdictions. 

While the overall structure of the examination processes at the DPMA and EPO is similar, the procedural details differ significantly. These differences, as will be explored in this article, can have important implications for applicants, particularly those looking to optimize their European patent strategies.

Procedural Advantages of Filing with the DPMA

Filing patents with the DPMA offers procedural advantages that set it apart from the EPO. These differences provide applicants with greater flexibility, simplified prosecution processes, and potentially broader protection scopes.

One key advantage at the DPMA is the availability of deferred examination. Applicants have up to seven years from the filing date to request examination. This extended timeline allows applicants to defer prosecution until they are ready, enabling them to align their patent strategy with business needs or market conditions. By contrast, at the EPO, the examination process effectively begins immediately after filing with the issuance of the European search report, leaving applicants with far less flexibility in managing the timeline.

Both the DPMA and EPO allow applicants to accelerate proceedings upon request.

The DPMA also allows applicants to slow down the prosecution process by requesting extensions to respond to office actions. These extensions are, in principle, unlimited and can be used to defer responses strategically, which is particularly useful in managing costs or waiting for critical market developments. At the EPO, by comparison, such extensions are far more restrictive; response deadlines for office actions can typically only be extended once, and then usually by no more than two months. This difference makes the DPMA a significantly more applicant-friendly system for managing procedural timelines.

When it comes to clarity, the DPMA offers applicants a distinct advantage: Clarity is not an issue at the DPMA. Unlike the EPO, where lack of clarity is explicitly cited as a ground for refusal under Art. 84 EPC, the DPMA does not reject applications based on clarity. Instead, clarity is assessed indirectly during claim interpretation, resulting in far fewer objections and preserving broader claim scope for applicants. By comparison, EPO examiners often demand detailed amendments to address clarity issues, frequently narrowing the claims and limiting the applicant’s strategic options.

Regarding added matter, the DPMA applies a less rigid standard than the EPO. While Section 38 of the German Patent Act prohibits the introduction of new matter, the DPMA generally adopts a more lenient approach, allowing more flexible amendments provided the core concept of the invention remains unchanged.. The EPO, governed by Art. 123 (2) EPC, enforces a stricter and more formal approach. Claim amendments at the EPO must be explicitly disclosed in the original application, and intermediate generalizations often lead to objections. This difference provides applicants at the DPMA with more opportunities to adjust their claims without risking rejection or undue limitation of the scope of protection.

Unity of invention is another area where the DPMA provides significant advantages. Section 34(5) of the German Patent Act permits multiple independent claims in a single application, even within the same category, to cover various aspects of the invention. Unity objections are rare and not enforced rigorously. Conversely, the EPO adheres strictly to Art. 82 EPC, which generally allows only one independent claim per category. To address multiple aspects of an invention, EPO applicants often need to file divisional applications, increasing costs and procedural complexity.

Another notable difference lies in the examination process itself. At the DPMA, a single examiner handles the entire examination, allowing for more direct and informal communication between the applicant and the examiner. This simplicity facilitates faster resolutions and minimizes formal procedural barriers. The EPO, on the other hand, employs an examining division composed of three examiners, resulting in more formal proceedings. Every interaction with the examining division is documented in official minutes, adding an additional layer of complexity and formality to the process.

In summary, the DPMA’s procedural framework offers deferred examination, more flexible timelines, fewer constraints on clarity, and a more accommodating approach to amendments and unity. These advantages make the DPMA an appealing choice for applicants seeking greater control and efficiency in their patent prosecution strategies. In contrast, the EPO’s stricter rules and formalities provide a more standardized but less adaptable system. For Chinese applicants, understanding and leveraging these procedural differences can be pivotal in optimizing their European patent strategies.

Cost Advantages of Filing with the DPMA

One of the most compelling reasons for Chinese applicants to consider filing directly with the DPMA is the significant cost advantage it offers throughout the entire grant procedure, from filing to the issuance of the patent. The DPMA’s lower official fees, combined with its flexible procedures, make it an attractive and cost-efficient option compared to the EPO.

a)Procedure up to grant

The cost difference is particularly evident when comparing the total of the official fees for the entire grant procedure. For a national phase application with 15 claims, the total official fees at the DPMA amount to just 360 EUR. In contrast, the EPO charges a total of 5335 EUR for the same application. This means that the DPMA fees are less than 10% of those required by the EPO.

For applications with a higher number of claims, the cost disparity becomes even more pronounced. For example, for a national phase application with 25 claims, the official fees moderately increase to 660 EUR at the DPMA. At the EPO, however, the official fees rise sharply to 8085 EUR, as the EPO imposes significant surcharges for excess claims.

The DPMA's cost efficiency is further underscored by its approach to fee increases. While the EPO typically raises its official fees every two years, the DPMA’s adjustments are far less frequent. For example, renewal fees at the DPMA were only marginally increased once in the past 20 years, in 2022. This stability provides applicants with predictable costs over the long term, making the DPMA particularly appealing for businesses seeking to minimize financial uncertainty.

In summary, the DPMA's official fees for the entire grant procedure are consistently lower than those of the EPO, regardless of the number of claims. This cost advantage may be a factor worth considering for Chinese applicants, particularly when filing multiple applications or protecting innovations that are primarily relevant to the German market. By choosing the DPMA, applicants can achieve substantial savings without compromising on the quality of patent protection.

b) Renewals 

Renewal fees are a critical consideration for maintaining patents. For European patents, validation in individual jurisdictions is required after grant, with the potential to validate in up to 45 countries to date. In each validated country, an individual renewal fee must be paid annually. With the introduction of the unitary patent system, European patents can also be opted into the unitary patent system to become a unitary patent, providing protection in up to 18 European countries with a single request and a unified renewal fee. 

In practice, most EP patents are validated in a limited number of countries. The majority are validated in five or fewer countries, with Germany, France, and the United Kingdom being by far the most popular choices, said choice reflecting their importance as key markets in Europe. Since the start of the unitary system, approximately 25% of granted European patents have opted for unitary effect.

The financial implications of renewal fees differ significantly between German national patents and European patents. Maintaining a European patent involves paying renewal fees in each validated country or paying a unified renewal fee for patents opted into the unitary patent system. In contrast, a German national patent requires renewal fees to be paid exclusively to the DPMA, resulting in much lower overall costs.

The following table compares the cumulative renewal fees (in EUR) for different common validation strategies of a European patent and a German national patent. The comparison assumes that both patents originated from a PCT application, with a grant after four years in the respective phase. For consistency, renewal fees for the United Kingdom have been converted to EUR.

As the table illustrates, the cost efficiency of a German national patent is unmatched, particularly for applicants targeting the German market. For example, over a 10-year period, the renewal fees for a German national patent amount to just 1,660 EUR, compared to 6,260 EUR for a European patent validated in Germany, France and the United Kingdom, or 7,960 EUR for a European patent with unitary effect plus validation in the United Kingdom. Over 20 years, these differences grow even more pronounced. In case the business model allows to limit the regional scope of protection to Germany, Chinese applicants can also significantly save on renewal fees.

Not to mention, validation of a European patent may also incur additional costs, such as translation fees and official validation charges, depending on the chosen countries. For applicants focusing on Germany, the significantly lower renewal fees and simpler maintenance of a German national patent provide a highly cost-effective solution.

Germany: Europe's Most Important Patent Litigation Venue

Germany is the leading venue for patent litigation in Europe, with its regional courts in Düsseldorf, Munich, and Mannheim handling approximately 675 patent litigation cases annually between 2020 and 2023. By comparison, the UK High Court saw about 50 cases annually and the Paris Judicial Court in France handled around 170 cases annually. The newly established Unified Patent Court (UPC) saw 134 infringement cases filed in its first year (June 2023 to May 2024), most of which were filed with local German divisions.

The dominance of German courts in patent litigation is driven by several factors. Germany is Europe's largest economy and a hub for trade and innovation, making it a prime jurisdiction for patent enforcement. Moreover, German courts are renowned for their efficiency, expertise in patent disputes, and the availability of automatic injunctions if infringement is proven – a significant advantage for rights holders seeking to enforce their patents swiftly.

When litigating in Germany, German national patents offer distinct advantages over European patents. A German patent is examined and granted solely under German law, which aligns seamlessly with the practices and requirements of German courts. The broader scope and procedural simplicity of German patents often result in stronger enforcement outcomes before German courts.

For Chinese applicants targeting the European market, a German national patent is not only a cost-efficient means of securing protection in Germany but also an optimal tool for enforcing rights in Europe’s most important litigation venue.

Conclusion

For Chinese applicants, there may be significant strategic advantages of filing patents with the DPMA instead of the EPO. The DPMA offers unmatched cost efficiency, procedural flexibility, and a patent system that aligns seamlessly with the practices of German courts, providing applicants with significant savings and stronger enforcement opportunities. With Germany’s position as Europe's largest economy and most important patent litigation venue, this opportunity comes without significant disadvantages for most business models even if the regional scope of protection would be decreased.

By leveraging the unique benefits of the DPMA – such as deferred examination, broader scope, claim flexibility and lower fees – Chinese applicants can secure robust protection in one of Europe's most critical jurisdictions while optimizing their patent strategies for long-term success.

In an increasingly competitive global market, understanding the nuances of the German patent system can provide Chinese businesses with a decisive edge. Filing directly with the DPMA is not just a cost-effective alternative to the EPO but also a strategic choice that ensures effective protection and enforcement in the heart of Europe.

For further information or consultation, please click to contact 2SPL Patent Attorneys.